The Complainant is Medtronic, Inc., United States of America, represented by Snell & Wilmer, LLP, United States of America (“United States” or “US”).
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / med tronic vascular supply, med tronic, Philippines. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2020. On September 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 18, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 28, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 29, 2020. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 22, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 23, 2020. The Center appointed George R. F. Souter as the sole panelist in this matter on November 23, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant is a producer and supplier of medical devices, and has been trading under its MEDTRONIC trademark since 1949. The Complainant trades in over 150 countries, employs tens of thousands of employees, and its annual turnover is in the tens of billions of (US) dollars. Over its trading history, it has spent over a hundred million (US) dollars in advertising its products under its MEDTRONIC trademark. It has provided the Panel with details of registrations of its MEDTRONIC trademark in over a hundred jurisdictions. These include US Federal Registration number 1038755, registered on May 4, 1976. The disputed domain name was registered on July 9, 2020, and it resolves to a website advertising and offering for sale face masks, surgical gowns and thermometers. 5. Parties’ Contentions A. Complainant The Complainant alleges that the disputed domain is confusingly similar to its MEDTRONIC trademark, in particular incorporating the Complainant's MEDTRONIC trademark in its entirety, with the mere addition of the descriptive or non distinctive element “supply". The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name, in particular, to the extent of the Complainant's knowledge, the Respondent is not generally known by the disputed domain name, and the Complainant declares that it has never granted permission to the Respondent to use its MEDTRONIC trademark in connection with registering a domain name, or otherwise. The Complainant alleges that the disputed domain name was registered in bad faith, and is being used in bad faith in connection with the website referred to above. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel is satisfied from the information provided that the Complainant’s MEDTRONIC trademark can be regarded as well-known. It is well-established in prior decisions under the UDRP, with which the Panel agrees, that a generic Top-Level Domain (“gTLD”) indicator is irrelevant when comparing a trademark with a disputed domain name. Accordingly, the Panel considers the <.com> indicator to be irrelevant in the circumstances of the present case, and so finds. It has been well-established in prior decisions under the UDRP that a disputed domain name which wholly contains a complainant’s well-known trademark together with the mere addition of descriptive or non distinctive elements is insufficient to avoid a finding of confusing similarity between a trademark and a disputed domain name. In the circumstances of the present case, the Panel considers that the mere addition of the word “supply" immediately following the Complainant's MEDTRONIC trademark in the disputed domain name is the mere addition of a descriptive or non distinctive element, and does not materially distinguish the disputed domain name from the Complainant's MEDTRONIC trademark sufficiently to avoid a finding of confusing similarity between the Complainants trademark and the disputed domain name, and so finds. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy. The Panel considers the submissions put forward by the Complainant as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith It is well-established in prior decisions under the Policy that a finding that a respondent has no rights or legitimate interests in a disputed domain name can lead, in appropriate circumstances, to a finding of registration of a disputed domain name in bad faith. The circumstance of the present case, in which the Panel is convinced that the Complainant's distinctive (as a coined word) and well-known trademark was deliberately and opportunistically (the products offered on the domain name operated under the disputed domain name being currently in high demand, as a result of the current Covid-19 pandemic) appropriated in the disputed domain name, are such that the Panel concludes that a finding of registration in bad faith is justified. The Panel notes, in particular, that the disputed domain name was registered during the current Covid-19 pandemic. Accordingly, the Panel finds that the disputed domain name was registered in bad faith. It is well-established in prior decisions under the Policy that the use of a disputed domain name in connection with the advertisement and offer for sale of products competing with those of the Complainant, constitutes use of a disputed domain name in bad faith. The Panel considers the factual circumstances in this case to be an egregious example of use in bad faith, and has no hesitation in finding that the disputed domain name is being used in bad faith, and so finds. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, George R. F. Souter
Sole Panelist
Date: December 7, 2020
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